tag:blogger.com,1999:blog-6733236595417664807.post4609612308905840209..comments2024-03-05T06:00:22.338-05:00Comments on All Things Pros: BPAI determines that reference's X teaches claimed "pseudo-X" (Ex parte Martinez)Karen G. Hazzahhttp://www.blogger.com/profile/14864564225463528630noreply@blogger.comBlogger6125tag:blogger.com,1999:blog-6733236595417664807.post-37549857218321343052010-03-11T09:30:49.998-05:002010-03-11T09:30:49.998-05:00"I'm almost certain you're wrong abou..."I'm almost certain you're wrong about this. I think that, when determining whether a rejection in an Examiner's Answer is "new", the relevant comparison is to the final Office Action"<br /><br />You are right of course. I note however that we are using the BPAI's made up rule. <br /><br />I do not believe the BPAI rule is analogous with Fed. Cir. procedure. That is I'm not sure that under the federal rules, new arguments responsive to points in the opponent's brief that "could have been raised" by the appellant, are prohibited in a reply brief.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-88578041320270884362010-03-10T17:25:11.389-05:002010-03-10T17:25:11.389-05:00>The Board's rules only address adding new ...>The Board's rules only address adding new <br />>evidence in a reply brief and say nothing <br />>about introducing new arguments in a Reply Brief. <br /><br />You're right, and you bring up a good point. <br /><br />It's turns out that the BPAI has been interpreting the rules to say "no new arguments in a reply brief" for some time now. Ex parte Borden (Appeal 2008-004312), which is an enbanc rehearing, is a pretty clear exposition of this rule, and the reasoning behind it. <br /><br />>In defending the "non rule" the BPAI relied on <br />>federal circuit case law regarding the contents <br />>of reply briefs for the federal circuit.<br /><br />Agreed that Fed Cir briefing requirements seem inapposite here. The panel in Ex parte Borden did a much better job of using the text of the rules themselves to explain the rationale. However, the panel in Borden referred to Fed Cir procedure. I'd say they used the Fed Cir to beef up their argument rather than relying on the Fed Cir procedure.Karen G. Hazzahhttps://www.blogger.com/profile/14864564225463528630noreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-43898245568334713352010-03-10T17:11:03.802-05:002010-03-10T17:11:03.802-05:00>In the Appeal Brief, the practitioner argued
...>In the Appeal Brief, the practitioner argued <br />>only the independent claims. The examiner, <br />>however, addressed the rejections of all of <br />>the claims in the Examiner's Answer<br /><br />So you view the dependent claim rejections as "new" because they were not made in response to the Appellant's Brief, right? <br /><br />>It seems to me that Examiner's Answer opened <br />>the door to new arguments by including the <br />>rejections to the dependent claims in the answer<br /><br />I'm almost certain you're wrong about this. I think that, when determining whether a rejection in an Examiner's Answer is "new", the relevant comparison is to the final Office Action, not the Appellant's Brief. That is, it's "new" if the Examiner adds something that wasn't in the last Office Action. <br /><br />I can't seem to find a CFR or MPEP section that spells this out exactly. But the New Grounds section in the MPEP (1207.03) sounds more like my definition than yours. "There is no new ground of rejection when the basic thrust of the rejection remains the same such that an appellant has been given a fair opportunity to react to the rejection." Certainly the Appellant had a chance to react, in the Brief, to any rejection stated in the last OA, right? <br /><br />Also, your interpretation of "new" is inconsistent with the requirement for the Examiner's Answer to address every rejection on appeal. (37 CFR 41.37(A)(6). Regardless of whether the Appellant chose to argue them in a Brief.Karen G. Hazzahhttps://www.blogger.com/profile/14864564225463528630noreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-88222433394709673852010-03-10T10:17:26.132-05:002010-03-10T10:17:26.132-05:00I was a bit bothered by the reliance on the psuedo...I was a bit bothered by the reliance on the psuedo NMI issue as the sole basis for appeal, so I took a look at the briefs which raised another issue.<br /><br />In the Appeal Brief, the practitioner argued only the independent claims. The examiner, however, addressed the rejections of all of the claims in the Examiner's Answer (probably cut/pasted from the office action). The Applicant then addressed additional rejections in the Reply Brief.<br /><br />The Board refused to consider the applicant's arguments for the dependent claims introduced in the Reply Brief.<br /><br />It seems to me that the Examiner's Answer opened the door to new arguments by including the rejections to the dependent claims in the answer, but the Board did not see it that way. <br /><br />The Board's rules only address adding new evidence in a reply brief and say nothing about introducing new arguments in a Reply Brief. In defending the "non rule" the BPAI relied on federal circuit case law regarding the contents of reply briefs for the federal circuit.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-20110564969190045282010-03-09T13:03:07.857-05:002010-03-09T13:03:07.857-05:00It's certainly true that such amendments often...It's certainly true that such amendments often result in a 102 becoming a 103. And I didn't mean to suggest that such an amendment would have been allowable here. <br /><br />I was merely following up on my statement that when function alone doesn't distinguish, you might want to add structure.Karen G. Hazzahhttps://www.blogger.com/profile/14864564225463528630noreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-67172347692907996512010-03-09T10:06:41.530-05:002010-03-09T10:06:41.530-05:00"Here, it seems like the Appellant could have..."Here, it seems like the Appellant could have claimed some structure along with the function, something like "generating an non-maskable interrupt signal connected to the NMI input line of a processor." <br /><br />The problem here is that Murthy describes simulating an NMI for a processor that did not have such a facility. It appears to me that Murthy must at least mention real NMI stuff. Perhaps amending the claims would have simply resulted in an easily forseealbe 103 rejection.Anonymousnoreply@blogger.com